Sym Choon & Co Ltd v Gordon Choons Nuts Ltd

Gordon Choons Nuts Ltd. applied to register a trade mark for fireworks, which featured a Guy Fawkes figure made of fireworks and flanked by two children with peanut-shaped bodies, with the company name incorporated. Sym Choon & Co. Ltd. opposed this application, arguing the mark was likely to deceive. The opponent relied on its own registered trade mark for nuts, which depicted two figures with peanut bodies, and a separately used mark featuring Guy Fawkes. Both companies operated in the same locality and dealt in similar goods, including nuts and fireworks. The Deputy Registrar dismissed the opposition, but the opponents appealed to the High Court.

The central legal issue before the High Court was whether the applicant's proposed trade mark was "likely to deceive" within the meaning of section 114 of the *Trade Marks Act 1905-1948*. This required the court to determine what factors should be considered when assessing the likelihood of deception, specifically whether the similarity of the parties' names, the proximity of their businesses, and their overlapping trade activities were relevant considerations in addition to the visual comparison of the trade marks themselves.

The High Court allowed the appeal, setting aside the Deputy Registrar's decision and refusing the application for registration. The majority of the court held that while the marks themselves bore similarities, particularly the use of peanut figures and a Guy Fawkes representation, the crucial factor was the likelihood of deception arising from the use of the trade mark. The court determined that the similarity of the companies' names, coupled with their operation in the same locality and engagement in similar businesses, were material considerations in assessing the likelihood of deception, especially as the applicant's name was incorporated into the mark. The court reasoned that the deception to which section 114 refers is not solely based on the visual comparison of marks in isolation, but also encompasses the context in which they are used, including the identity of the traders and their market presence. The court also granted leave for the Registrar of Trade Marks to intervene but made no order as to his costs.